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Archived updates for Tuesday, October 16, 2007

Overview and Punch List for the USPTO's Claim/Continuation Rules Effective November 1, 2007

On October 10, 2007, the USPTO published a "Clarification of the Transitional Provisions Relating to Continuing Applications and Applications Containing Patentably Indistinct Claims (signed 10 October 2007)." Here are some abreviated "highlights" of the impending rule changes, including that clarification, and punch lists of required and optional items for corporate practitioners to complete before various deadlines.

Please feel free to leave a comment if it appears that I have overlooked or mistated any signifacnt aspects of the impending requirements for the new rules.

  1. CONTINUING APPLICATION LIMITS: Each initial application or divisional (DIV) may have 2 continuation (CON) or continuation-in-part (CIP) applications and 1 request for continued examination (RCE). Otherwise, priority claim will not be entered.

    - Additional CON/CIP applications/RCEs may be requested via a petition that is unlikely to be granted.
    - “One More” continuing application may be filed after August 21, 2007 regardless of parentage, i.e., any second RCE will NOT require petition.
    - PCT international phase applications and incomplete U.S. applications do not count against application limits
  2. 5/25 CLAIM LIMITS: Claims in each “indistinct” application family may not exceed 5 independent claims or 25 total claims, for applications without FAOM on November 1, 2007. Otherwise applicant will be asked to delete claims or file an extensive Examination Support Document (“ESD”), within a two-month (sometimes extendable) deadline. Suggested Restriction Requirement (“SRR”) may also be submitted if there is no FAOM or Restriction Requirement.

    - Note that ALL claims in other commonly owned applications having one patentably indistinct claim are included in 5/25 count, not just the patentably indistinct

    - Withdrawn claims are not counted

  3. RELATED APPLICATION DISCLOSURE: Applicants must identify before (the later of) February 1, 2008 (or four months from filing or two months from mailing of filing receipt), commonly owned applications or patents with at least one common inventor that have:
  4. A. a filing, benefit, or priority date before November 1, 2007, that is the same
    as the actual filing, benefit, or priority date of the other pending or patented
    application, or

    B. a filing, benefit, or priority date on or after November 1, 2007, that is within two months of the filing, benefit, or priority filing date of the other pending or patented application.

    Otherwise, potential for inequitable conduct.

    Also, for applications and patents that have the same filing or priority date and substantial overlapping disclosures (with support for one claim), applicant must submit within (the later of) four months of filing (or two months from filing receipt mailing) a terminal disclaimer, or explanation how the claims are patentably distinct, in order to overcome double patenting presumption.

    - USPTO may require applicant to put all patentably indistinct claims in same application, but all claims in both applications will count toward 5/25 limit

    - USPTO recently made public its draft form SB206

    - Additional disclosure may still be required under court decisions such as McKesson Information Solutions v. Bridge Medical (Fed. Cir., 2007), rejecting counsel’s reliance on Akron Polymer Container Corp. v. Exxel Container, Inc. (Fed. Cir. 1998)

  5. CIP PRIORITY SUPPORT IDENTIFICATION: Applicants must identify the claims in a CIP application that are supported by the prior-filed application for

A. applications where the first Office action on the merits is mailed on or after November 1, 2007, and

B. continuation-in-part applications filed before November 1, 2007, the applicant may delay compliance until February 1, 2008.

Otherwise, claims will be given benefit of only the actual filing date of the CIP application.



  1. By October 31, 2007, Implement Search Capabilities for “Within Two-Month” Related Application Disclosure in Item 3
  2. By January 31, 2007, Complete “Same Date” Related Application Disclosure in Item 3
  3. By January 31, 2007, Complete CIP Priority Support Identification in Item 4 for Applications Filed before November 1, 2007


  1. By November 1, 2007, where RCE or multiple continuing applications have already been filed in an application family, consider filing new continuation applications
    • to accommodate claims canceled from other cases due to the 5/25 claim rule.
    • to serve as vehicle for continuing examination where no RCE available
  2. By November 1, 2007, for cases without FAOM and more than 5/25 claims, consider
    –Filing Preliminary Amendment to cancel claims to get to 5/25 claims
    –Requesting refund of excess claims fees previously paid
    –Filing SRR with election or ESD Document (typically not recommended)
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April 07, 2009 1:15 AM  

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